The number of countries and regions that joined the international system of trademarks registration under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement continues to grow.
Indonesia has become the 100-th member of the Madrid system and the fourth country of the South East Asia that recently joined the mentioned system – after Laos (7 March 2016), Brunei (6 January 2017) and Thailand (7 November 2017).
The accession of Indonesia to the Madrid system
The Protocol will enter into force for Indonesia on 2 January 2018. After accession of Indonesia the Madrid system will cover 116 jurisdictions. From the beginning of the next year foreign companies and trademark owners will be able to use the Madrid system for the protection of trademarks in Indonesia, the global market leader and one of the five countries from G20 with the fastest growing economies.
Indonesia is the eighth member of the Association of the South East Asian Nations (ASEAN) that joined the Madrid Union. This step only brings the ASEAN closer to its goal – to promote transfer of technologies throughout the region and stimulate innovation by strengthening cooperation in the sphere of intellectual property rights protection.
The accession of Indonesia to the Madrid system envisages the following conditions:
Indonesia has chosen 18-months period for refusal of international registrations. But, in cases when refusal of registration is based on the opposition of a third party, WIPO can be notified on refusal after expiration of 18-months period. For comparison, upon registration under the national procedure it was necessary to wait for 15-18 months for the receipt of the first notification from the Patent Office. But, in view of amendments in trademark legislation of Indonesia, made in November 2016, the announcements of filed applications are published within only several weeks after the date of application filing, and it is expected that this new approach will lead to the reduction of time frames for trademark registration;
application of individual fees at the stage of examination (as of 2 January 2018 – 144 Swiss francs for each class of goods or services for international applications where Indonesia was designated or declarations on subsequent designation of international registration; 180 Swiss francs for each class of goods or services for renewal of international registrations where Indonesia was designated (or 360 Swiss francs for each class of goods or services if the basic term for renewal was missed;
lack of effect in Indonesia of licenses’ registrations made in the International register – with the purpose of legal effects for the third parties the licensing agreements and agreements on disposition of rights with regard to trademarks are subject to compulsory state registration.
Several peculiarities of the national legislation of Indonesia are given below:
If the registered mark becomes a generic term, any person may file an application for registration by using the generic name and adding one more additional wording taking into account that it has distinguishing feature.
The registration of a mark can be deleted early If it can be proven that a Mark has not been used for 3 (three) consecutive years in trade of goods and/or services from the date of registration or of the last use.
A lawsuit for cancellation of the registration of a mark shall be filed within a period of 5 (five)years after the date of the mark registration, but this limitations shall not be applied, if the mark was registered with bad faith or it contradicts with the prevailing rules and regulation, morality of religion, or public order.
Author: Olga Kreshchenko
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